IPO Allows the Priority Documents To Be Submitted in Electronic Format

Under the current practice, for a patent application filed with priority claim, the applicant must timely submit to the Intellectual Property Office (IPO) an original certified priority document issued by the foreign patent office receiving the priority application. On 29 June 2016, the IPO announced an amendment of the Enforcement Rules of the Patent Act ("Rules") and the formality requirement for a priority document has been relaxed through the said amendment.

According to Article 26 of the amended Rules, a patent applicant may have the following options to comply with the "priority document submission requirement."

1.To submit an original and certified priority document;

2.To submit a certified priority document in CD-ROM format that is issued by the Foreign Patent Office;

3.To submit a priority ; and

4.To submit a reproduced copy of the original certified priority document.

As you may note, under the amended Rules, a patent applicant may have options (rather than submitting an original and certified priority document) to comply with the "priority document submission requirement." For example, if a patent applicant cannot send the original and certified priority document to its Taiwan patent firm before the deadline (deadline for submitting a priority document). It can send the priority document by email to its Taiwan patent firm, which can be used to comply with the "priory claim".

The new practice has taken effect as of 29 June 2016, which applies to (1) patent applications filed on or after 29 June 2016, and (2) patent applications filed prior to 29 June 2016 but with a due date for submitting the priority document(s) on or after 29 June 2016. Given the above, the new practice applies to the subject patent application.

According to the amended Rules, if a patent applicant chooses Option 3 or Option 4 above, it or its patent agent must store an electronic file of the priority document in a CD-ROM and submit the CD-ROM file to the IPO. In addition, please authorize us to file a declaration (on a case-by-case basis), stating that the reproduced copy of priority document is a true copy of its original.

We hope that you find the above information helpful. We look forward to hearing your further instructions.